JAPAN Law and Practice Contributed by: Hirofumi Tada, Ohno & Partners
1.15 Defences and Exceptions to Patent Infringement In Japan, invalidity is the most frequently asserted defence in infringement actions. Also, the consent/licence, prior use, exhaustion, and experimental use defences are available. In the life science field, it is often asserted that an injunction is vastly against the public good, but it is highly unlikely that the court will refrain from granting an injunction based on this ground. Japan has a compulsory licence system, but it has never been granted. 1.16 Stays and Relevance of Parallel Proceedings Japan does not have any official framework to stay litigation due to parallel proceedings. Some court judges tend to wait for the outcome of an invalidity proceeding before the JPO if it will be granted in a few months, but others do not. It is important to know your judge. Japanese courts generally do not wait for foreign proceedings. 1.17 Patent Amendment Even during infringement litigation, a patent own - er may file an amendment demand before the JPO. A patent owner is required to file an amend - ment demand to raise an amendment re-defence against an invalidity defence in the infringement litigation, so it is highly important to timely file an amendment demand before the JPO. (In some circumstances, such as when a patent owner cannot file an amendment demand due to the timing limitation imposed by the Patent Act, an amendment demand is not required to raise the re-defence.) The amendment re-defence is often used and effective in infringement actions. 1.18 Court Arbiter All patent litigation cases in Japan are decided by a panel of three judges from IP-specialised
for patent infringement after launch and can be excluded from the market later on. 1.12 Experts Expert declarations often help parties persuade judges on technical issues both on infringement and validity. There are no specific requirements or procedures for evidence from experts, but the parties file written declarations instead of oral testimonies as Japanese procedures are highly focused on written evidence. Sometimes, a party retains multiple experts, but too much focus on technical issues is usually not effective nor persuasive to the judges as most of them do not have technical backgrounds. However, it is highly important to choose a good expert trustworthy to Japanese judges. The Japanese court separately appoints an expert who supports the judge’s understanding of technical aspects of the case from a very early stage in the proceedings. 1.13 Use of Experiments Japan does not have specific mechanisms or procedures to submit experimental results. Any forms of experimental result report are admis - sible as long as the person who prepared the report signs and/or seals it. As most Japanese judges do not have technical backgrounds, too complicated or lengthy a report is not preferable, and it is helpful to attach an expert declaration explaining the meaning of the results. 1.14 Discovery/Disclosure Japan does not have discovery even in the post- action stages. There are document production order and inspection procedures, but their avail - ability is limited, as explained in 1.7 Pre-Action Discovery/Disclosure .
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